The Complainant is Virgin Enterprises Limited of London, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by Ipulse, UK.
The Respondent is Siyaset Alemi, Erkut Aktas (217011) of Ankara, Turkey. 2. The Domain Name and Registrar
The disputed domain names , and are registered with Reg2C.com Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 8, 2013. On January 8, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 9, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On January 15, 2013, the Center transmitted the language of the proceedings document to the parties in both English and Turkish. On January 18, 2013, the Complainant requested English to be the language of the proceedings. The Respondent did not submit its comments.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 22, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 11, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 12, 2013. On February 12, 2013, after the notification of the Respondent’s default, the Center received an informal email communication in Turkish from the Respondent.
The Center appointed Kaya Köklü as the sole panelist in this matter on February 18, 2013. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant is a member of the well-known Virgin group, which was originally established in the UK in 1970.
The Complainant is the registered owner of a large number of trademarks incorporating the mark VIRGIN, such as the Community Trademark Registrations Nos. 1798560, filed on August 8, 2000 and registered on June 5, 2002, in classes 3, 9 and 39; 2424885, filed on October 25, 2001 and registered on March 4, 2003, in classes 5, 29, 30 and 31; and 3252335, filed on July 3, 2003 and registered on December 20, 2004, in class 36. As the present case is linked to the Complainant’s business in Turkey, it is worth to note that as of the year 2005, the Complainant also owns a significant number of registered VIRGIN trademarks in Turkey.
The Complainant further owns several thousands of domain names incorporating its trademark VIRGIN, such as , and since 2008 .
The Respondent is apparently an individual from Turkey.
The disputed domain names were all registered on January 6, 2010.
As evidenced by the Complainant, the disputed domain names have been redirected to other domain names linked to Turkish websites providing information on news and radio broadcasting. 5. Parties’ Contentions A. Complainant
The Complainant requests the transfer of the disputed domain names.
First, the Complainant argues that the disputed domain names are confusingly similar to the Complainant’s well-known VIRGIN trademarks.
Second, the Complainant is of the opinion that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant in particular alleges that it has not licensed or otherwise permitted the Respondent to use any of its trademarks and has not permitted the Respondent to register or use any domain name incorporating its VIRGIN trademark. The Complainant further asserts that the Respondent has never used the disputed domain names, nor made any demonstrable preparations to use the domain names in connection with a bona fide offering of goods or services.
Third, the Complainant is convinced that the Respondent has registered and is using the disputed domain names in bad faith. It is argued that the VIRGIN trademarks were already well known many years prior to the date of registration of the disputed domain names by the Respondent. Furthermore, it is alleged that the Respondent claimed USD 1,000.00 for the transfer of the disputed domain names to the Complainant, which, in view of the Complainant, supports the claim that the Respondent has no legitimate interest in the disputed domain names and is using them in an attempt to benefit financially. B. Respondent
The Respondent did not formally reply to the Complainant’s contentions.
However, the Center received an informal and short email communication in Turkish language on February 12, 2013, one day after expiry of the deadline to submit the Response.
In this email communication, the Respondent admits that a search in the trademark register of the Turkish Patent Institute has revealed that the disputed domain name may be assessed as confusingly similar to the Complainant’s VIRGIN trademarks. However, with regard to the disputed domain names and , the Respondent asserts that there is no confusing similarity as it has decided to use these disputed domain names for purposes different to radio broadcasting.
No other of the Complainant’s allegations raised in the Complaint have been addressed in the Respondent’s email communication to the Center. A particular request concerning the remedies in these administrative proceedings has also not been filed by the Respondent. 6. Discussion and Findings
To begin with, the Panel determines in accordance with the Complainant’s request and the Rules, paragraph 11(a), that the language of these administrative proceedings shall be the English language. Although the language of the Registration Agreement is the Turkish language, the Panel finds that it would be inappropriate, given the circumstances of this case, to conduct the proceedings in Turkish and request a Turkish translation of the Complaint while the Respondent has failed to raise any objection or even to formally respond to the Complaint or the Center’s email communication with regard to the language of the proceedings communicated both in Turkish and in English. The Panel is convinced that the Respondent will not be prejudiced by the Decision being rendered in English, as the Respondent is apparently capable to read, write and understand the English language, in particular as it has remained undisputed that there were settlement negotiations between the Parties in English.
According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the Complaint where no Response has been submitted.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(i) the disputed domain names are identical or confusingly similar to the trademark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not formally or properly replied to the Complaint. Stanworth Development Limited v. E Net Marketing Ltd.,WIPO Case No. D2007-1228.
However, concerning the uncontested information provided by the Complainant, the Panel may as appropriately accept the provided reasonable factual allegations in the Complaint as true. Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110.
In this context, the Panel finds that the informal email communication received by the Center on February 12, 2013 does not qualify to be a formal Response to the Complaint. However, as it contains at least a sort of argumentation on the merits of the case, the Panel will nevertheless consider this informal email communication in its Decision.
It is further noted that independent research, i.e., visiting the Internet sites linked to the disputed domain names and checking the Turkish trademark registers, has been performed by the Panel on February 26 and 27, 2013. The competence of the Panel to perform such independent research is in line with previous UDRP decisions (see, e.g., Hesco Bastion Limited v. The Trading Force Limited,WIPO Case No. D2002-1038).
Finally it is noted that the Panel has taken note of WIPO Overview of Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) and, where appropriate, will decide consistent with the WIPO Overview 2.0. A. Identical or Confusingly Similar
The Panel finds that the disputed domain names are confusingly similar to the VIRGIN trademarks of the Complainant.
First, the Panel confirms that the Complainant has satisfied the threshold requirement of having trademark rights in the term “virgin”. As evidenced in the Complaint, the Complainant is the owner of a large number of VIRGIN trademarks, not only in Turkey but worldwide, covering protection for a broad scope of services and products.
Although not identical, the disputed domain names fully incorporate the trademark protected sign VIRGIN.
The disputed domain names differ from the VIRGIN trademarks only by the addition of the Turkish generic terms “turk” and “turkradyo”, which means “Turkish” and “Turkish radio” in the English language. In the Panel’s view, the addition of generic terms like “turk” and “turkradyo” does not negate the confusing similarity between the Complainant’s trademark and the disputed domain names. The Panel finds that this incorporation is purely descriptive and does not create a new distinctiveness separate from the Complainant’s VIRGIN trademarks. On the contrary, the full inclusion of the Complainant’s trademark in combination with these generic terms may even enhance the false impression that any websites linked to the disputed domain names are somehow officially related to the Complainant and its provided goods and services in Turkey.
Bearing in mind the notoriety of the mark VIRGIN, the Panel concludes that the disputed domain names are likely to confuse Internet users in their believing that the disputed domain names are affiliated or endorsed by the Complainant or that the use of the disputed domain names is at least authorized by the Complainant.
In view of the above, the Panel is satisfied that the Complainant has met the requirements under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The Panel further finds that the Respondent has not demonstrated any rights or legitimate interests in the disputed domain names.
While the burden of proof remains with the Complainant, the Panel recognizes that this would often result in the impossible task of proving a negative, in particular as the evidence needed to show the Respondent’s lack of rights or legitimate interests is primarily within the knowledge of the Respondent. Therefore, the Panel agrees, in line with prior UDRP decision, that the Complainant is required to make out a prima facie case before the burden shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain names in order to meet the requirements in paragraph 4(a)(ii) of the Policy, Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
The Panel finds that the Complainant has satisfied this requirement, while the Respondent has failed to file any evidence or convincing argument to demonstrate a right or legitimate interest in the disputed domain names according to the Policy, paragraph 4(a)(ii) and 4(c).
With its Complaint, the Complainant has provided uncontested prima facie evidence that the Respondent has no trademark, valid license or any similar right to use any of the Complainant’s VIRGIN trademarks in the disputed domain names.
In the absence of a proper Response by the Respondent, there is also no indication in the current record that the Respondent is commonly known by the disputed domain names, in particular as the disputed domain names have been redirected to other domain names. Furthermore, the Respondent has failed to demonstrate any of the other nonexclusive circumstances evidencing rights or legitimate interests under the Policy, paragraph 4(c) or any other evidence of a right or legitimate interest in the disputed domain names. Especially, the Respondent has failed to show that the disputed domain names have been used in connection with a bona fide offering of goods or services. There is also no indication that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names without the intent to tarnish the Complainant’s VIRGIN trademarks.
In particular, the Respondent is not able to successfully rely on possibly existing user rights based on the allegation that the disputed domain names and are intended to be used for purposes different than radio broadcasting (as alleged by the Respondent in its email communication of February 12, 2013). In this context, it first needs to be noted that the Respondent did not provide any evidence or convincing documentation that would verify its allegation. Additionally, the allegation as such is already not convincing as the Respondent registered all three disputed domain names at the same time, including , but, being confronted with the Complainant’s claim, now alleges not to intend using these domain names in a trademark infringing manner anymore. The Panel is of the opinion that this is a self-serving assertion by the Respondent only. The Panel finally notes that a use different than radio broadcasting may nevertheless infringe the Complainant’s trademark rights, given the notoriety and broad scope of protection of the Complainant’s VIRGIN trademarks worldwide, including in Turkey.
The Panel believes that in the present case any use of the VIRGIN trademarks by the Respondent needs to be assessed as an unauthorized and illegitimate use.
Overall, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel is convinced that the Respondent has registered and is using the disputed domain names in bad faith.
First, the Panel believes that the Respondent was well aware of the VIRGIN trademarks when it registered the disputed domain names in 2010. At the date of registration, the VIRGIN trademarks were already established and well known for many years worldwide. Even in Turkey, the Complainant launched its national radio broadcasting a couple of years before the Respondent registered the disputed domain names.
In the Panel’s view, it is quite apparent that the Respondent tries to monetize on the prominence of the Complainant’s VIRGIN trademarks and to commercially benefit from misled customers. The Panel believes that the Respondent’s sole purpose is to create a likelihood of confusion among users and/or to tarnish the Complainant’s VIRGIN trademarks.
This is particularly likely as the Respondent apparently claimed a payment of USD 1,000.00 for the transfer of the disputed domain names. At least the Respondent did not contest this allegation made by the Complainant. In view of the Panel, such request for payment, which obviously exceeds the Respondent’s out-of-pockets expenses, indicates its bad faith intention in registering and using the disputed domain names.
In light of the above, the Panel cannot conceive of any good faith use of the disputed domain names by the Respondent.
The Panel therefore concludes that the disputed domain names were all registered and are being used in bad faith and that the Complainant consequently has satisfied the third element of the Policy, namely, paragraph 4(a)(iii). 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names , and be transferred to the Complainant.
Kaya Köklü
Sole Panelist
Date: March 5, 2013
Full & Egal Universal Law Academy